Chelsea Market Baskets, Ltd.

Trademark Trial and Appeal Board

Feb 9, 2001

No. 75601518 (T.T.A.B. Feb. 9, 2001)

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Paper No. 9
RFC
1
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Chelsea Market Baskets, Ltd.
________
Serial No. 75/601,518
_______
D. Darden of Phelps Dunbar, LLP for Chelsea Market
ts, Ltd.
a A. Lee, Trademark Examining Attorney, Law Office 111
g Taylor, Managing Attorney).
_______
e Cissel, Walters and Hairston, Administrative
mark Judges.
on by Cissel, Administrative Trademark Judge:
On December 6, 1998, the above-referenced application
iled to register the mark “CHELSEA MARKET BASKETS” on
rincipal Register for “mail-order food catalog and
l food store services,” in Class 42. The basis for
g the application was applicant’s claim that it had
the mark in connection with the specified services in
rce since April 10, 1997.
Ser No. 75/601, 518
2
The Examining Attorney refused registration under
Section 2(d) of Lanham Act on the ground that applicant’s
mark, as used in connection with the services set forth in
the application, so resembles the mark “MARKET BASKET,”
which is registered1 for “retail grocery services,” in Class
42, that confusion is likely. The Examining Attorney also
required applicant to disclaim the descriptive term “MARKET
BASKETS” apart from the mark as shown because the specimens
submitted with the application show that applicant sells
food products in market baskets. Additionally, applicant
was advised that the proper classification for the services
set forth in the application was Class 35.
Applicant did not respond to the refusal to register,
but applicant did submit amendments to enter the requested
disclaimer and to amend the classification to Class 35.
The Examining Attorney accepted the amendments, but
made final the refusal to register under Section 2(d) of
the Act. Attached to the final refusal were copies of a
number of third-party registrations wherein the services
listed include both retail food store services and mail-
order catalog services featuring food.
1 Reg. No. 2,122,759 issued on the Principal Register to M & E
Food Mart, Inc. on December 23, 1997.
Ser No. 75/601, 518
3
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs, but
applicant did not request an oral hearing before the Board.
The sole issue before us in this appeal is whether
confusion is likely between applicant’s mark, “CHELSEA
MARKET BASKETS,” as used in connection with mail order food
catalogue services, and registrant’s mark, “MARKET BASKET,”
in connection with retail grocery services. After careful
consideration of the record and arguments before us in this
appeal, we find that the refusal to register under Section
2(d) of the Lanham Act is well taken.
The predecessor of our primary reviewing court set
forth the factors to be considered in resolving the issue
of likelihood of confusion in In re E. I duPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). We must
look at the marks themselves for similarities in
appearance, sound, connotation and commercial impression,
and then we must compare the services set forth in the
application to the services specified in the cited
registration to determine if they are related or if the
activities surrounding their marketing are such that
confusion as to origin is likely if similar marks are used
in connection with both. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Ser No. 75/601, 518
4
In the case at hand, when it is considered in its
entirety, applicant’s mark is similar to the cited
registered mark. Applicant has essentially appropriated
the entire registered mark (although applicant has used the
plural form of the word “BASKET”) and prefaced it with the
name “CHELSEA.” The addition of a name or another term to
a registered mark is generally insufficient to overcome a
likelihood of confusion. Coca-Cola Bottling Co. v. Joseph
Seagram & Sons, Inc. 526 F.2d 556, 188 USPQ 105 (CCPA
1975). By adding the name “CHELSEA” to the wording “MARKET
BASKETS,” applicant has failed to meet its burden of
selecting a mark that is not likely to cause confusion with
a mark which is already registered.
Further, applicant’s disclaimer of what is in essence
the registered mark does not overcome the refusal to
register. As the Examining Attorney points out, it is
contrary to the fundamental principles of trademark law to
allow an applicant to register a mark which is already
registered by simply disclaiming the registered mark and
adding another word to it. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant’s contention that confusion is not likely
because the disclaimed portion of its mark is “weak” is not
well taken. It is not supported by the record. To the
Ser No. 75/601, 518
5
contrary, “MARKET BASKET” is registered on the Principal
Register with no disclaimer or claim of distinctiveness
under Section 2(f) of the Act. This hardly constitutes
evidence of any “weakness” of the words in source-
identifying significance.
In summary on this point, these two marks create
similar commercial impressions in connection with the
services with which they are used because applicant’s mark
is essentially the registered mark prefaced by the name
“CHELSEA.” When marks as similar as these are used in
connection with related services, confusion is plainly
likely.
Notwithstanding applicant’s arguments to the contrary,
the services set forth in the application are closely
related to those specified in the cited registration. As
amended, the application identifies applicant’s services as
“mail-order food catalogue services.” The cited
registration lists registrant’s services as “retail grocery
store services.” The third-party registration information
made of record by the Examining Attorney shows that other
businesses have registered their trademarks for both of
these services. This evidence provides us with a basis
upon which to conclude that consumers have reason to expect
that the use of similar marks in connection with both of
Ser No. 75/601, 518
6
these services relating to the sale of food is an
indication that one entity is responsible for both. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Co., 6 USPQ2d 1467 (TTAB 1988). Indeed,
the application as originally filed indicated that
applicant itself sells food both at retail and by means of
mail order catalogues.
Applicant argues that its services are not related to
the services specified in the cited registration,
contending that registrant provides ordinary food items
which are purchased by consumers in a fixed location,
whereas applicant provides gift baskets by mail to a
higher-end market niche, “providing consumers with an
opportunity to purchase luxury items (rather than staple
goods) for guests from the convenience of their homes.”
(Brief, p. 4).
The problem with this argument is that neither the
recitation of services in the cited registration nor the
recitation in the application is restricted in the ways
asserted by applicant. It is well settled that in
determining whether confusion is likely, we must base our
decision on the way the services are identified in the
application and registration, respectively, without
limitations or restrictions that are not reflected therein.
Ser No. 75/601, 518
7
Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983)
and cases cited therein. When we adopt this approach, we
cannot restrict or limit the items sold in registrant’s
retail grocery store, nor can we do so with respect to the
products provided by means of applicant’s mail order food
catalogue services. As identified in the application and
registration, respectively, both services could include the
sale of ordinary food items as well as food products
directed to gourmets or items intended to be used as gifts
for others.
Contrary to the arguments presented by applicant, the
services, as identified, are not restricted as to
purchasers. Both services, as identified, are typically
provided to ordinary consumers. Also contrary to
applicant’s arguments, we have no basis upon which to
conclude that the consumers to which applicant’s services
are directed are more discerning or have any particular
level of sophistication that would reduce or eliminate the
likelihood of confusion in this case.
In summary, the record before us in this appeal
establishes that applicant’s mark is similar to the cited
registered mark and that the services set forth in the
application are commercially related to those specified in
Ser No. 75/601, 518
8
the registration. Under the circumstances, it is clear
that confusion is likely.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.
Ser No. 75/601, 518
9